Perfumes, trademark infringement and unfair competition

Someone thought he could sell similar perfumes to "brand", using lists of equivalences, without incurring any legal infringement?

Although it is a small-scale practice that has existed in the market for years, Recently developed market companies specializing in perfume "imitation". They will have to come even television advertising campaigns. However, readers will agree that this business model, "Squeaks" from a Western perspective to respect and protect the investment that companies make in product development, design and implementation of its brands.

It would be extremely difficult to sell these products without somehow was to refer to the original brand. (For those especially interested, noteworthy with regard to this issue of the STJUE 18 June 2009).

On one of these cases, It has pronounced the judgment of the Provincial Court of Alicante, in Case 14 September 2014.

The Saphir Group is engaged in the manufacture and sale of own perfumes, that identifies with the brand but equivalent to the brands of prestigious companies. In fact, for internal use and their distributors, It has listings of equivalence between each perfume, As it was proved by the private investigation reports submitted by the applicants in the process to which we refer below.

Meanwhile the Group Tree, Caravan commercialized bottles with labels referring to correspondence with the marks of the applicants. And although they were required for removal, they did.

According to reports submitted in the preliminary hearing, detectives manufacturers, They flocked to retail outlets acting as individuals and were provided with "Listings equivalence" of original perfumes imitations. In theory, this information was confidential and should not reach the public.

The Court CTM number 2 He gave judgment on 14 January 2015 in which estimated demand and considered:
1.- Infringed the trademark "Carolina Herrera", “CH”, “212”, “Ultraviolet”, "Paco Rabanne", “Black XS”, “One Million”, “Lady Million”, "Nina Ricci" and "J Paul Gaultier" for marketing its perfumes equivalents by Laboratorios Saphir, Perfume industry Aragon, Caravan fragrances and Distribution Group Tree and Supermarkets.
2.- Laboratorios Saphir, Perfume industry Aragon, Fragrances and Caravan Tree Distribution Group and supermarkets have engaged in unfair competition against Antonio Puig.
He sentenced the defendants, to cease marketing, remove the disputed product and advertising materials, to refrain from providing "Listings equivalence" other distributors (This conviction is excluded Tree), to compensate the applicants jointly, publishing at their expense the judgment in the newspaper "Expansion" and "El País", and to pay the costs.

Action was estimated trademark infringement founded in the double identity (RMC and articles 9.1.a 34.2 LM) and enhanced protection of the known marks (RMC and articles 9.1.c 34.2 LM). The request for compensation for moral damages was not accepted by the plaintiffs.

The defendants Saphir Group and The Tree each brought an appeal

The Board considers that it is not necessary to refer to the original brand to market the product. On the contrary, inserting equivalence with the actors brands, It is invited consumers to buy such products. Without reference to the original brand perfumes for consumers lacked commercial interests, according to the evidence provided by the plaintiff.

The claim that the actions of the applicants had prescribed rejected, because the prescription should be interpreted restrictively (STS 8 June 2015), You can not prove the date on which the actors could learn the facts, when filing the demand, acts still persisted, They have not elapsed 5 year prescription for brand protection actions Article 45 LM and "unfair delay" is not given in bringing proceedings as contrary to good faith (STS 19 February 2014).

Equally the claim that the lists were confidential equivalence is dismissed. And the infringement by its commercial, even if they were free agents, can not exonerate the Saphir Group responsibility.

The coincidence in all establishments including references Saphir and brands infringed can have no other origin than Equivalence list of the group.

Moreover, although it was not used in concrete brand in the marketing of perfumes Saphir (not the function of indicating the origin of the products is impaired), It is considered as infringing mark that harms other functions of the mark as are the prestige, reputation, or "goodwill" that is inherent marks of the plaintiffs and which "It seeks to appropriate the Saphir Group to promote their products".

It also ruled that needed to describe fragrances refer to the original brands.

Ultimately, Hall acting as the Community Trademark Court, confirms the judgment of the Court Community Trademark number 2 Alicante, Estimating actions trademark infringement and unfair competition.